IPBiz

Intellectual property news affecting business and everyday life

Tuesday, May 31, 2016

Innovative Wireless Solutions loses appeal at CAFC

The outcome of the Ruckus Wireless case:

Innovative Wireless Solutions (“IWS”) appeals the final
judgment of non-infringement of the district court in
the Western District of Texas. IWS challenges the district
court’s conclusion that the asserted patent claims are
limited to wired rather than wireless communications.
Because we find no error in the district court’s construction,
we affirm.

Note

The canons of claim construction provide additional
reason to limit the scope of the claims to wired communication.
If, after applying all other available tools of claim
construction, a claim is ambiguous, it should be construed
to preserve its validity. Phillips, 415 F.3d at 1327. Because
the specification makes no mention of wireless
communications, construing the instant claims to encompass
that subject matter would likely render the claims
invalid for lack of written description. See Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir.
1998) (holding that a claim “may be no broader than the
supporting disclosure”). The canon favoring constructions
that preserve claim validity therefore counsels against
construing “communications path” to include wireless
communications.

We conclude that no intrinsic or extrinsic evidence
suggests that “communications path” encompasses wireless
communications. Accordingly, we affirm the district
court’s claim constructions and final judgment of noninfringement
based thereon.

There is a New Jersey connection. The first named inventor [Hui Jin] of Caltech's 7,116,710 has a listed address in Glen Gardner, NJ.

Of the '710 patent, note: The U.S. Government has a paid-up license in this invention and the right in limited circumstances to require the patent owner to license others on reasonable terms as provided for by the terms of Grant No. CCR-9804793 awarded by the National Science Foundation.

As to related cases: This application claims priority to U.S. Provisional Application Ser. No. 60/205,095, filed on May 18, 2000, and to U.S. application Ser. No. 09/922,852, filed on Aug. 18, 2000 and entitled Interleaved Serial Concatenation Forming Turbo-Like Codes.

The "background" of '710 states:

Properties of a channel affect the amount of data that can be handled by the channel. The so-called "Shannon limit" defines the theoretical limit of the amount of data that a channel can carry.

Different techniques have been used to increase the data rate that can be handled by a channel. "Near Shannon Limit Error-Correcting Coding and Decoding: Turbo Codes," by Berrou et al. ICC, pp 1064 1070, (1993), described a new "turbo code" technique that has revolutionized the field of error correcting codes. Turbo codes have sufficient randomness to allow reliable communication over the channel at a high data rate near capacity. However, they still retain sufficient structure to allow practical encoding and decoding algorithms. Still, the technique for encoding and decoding turbo codes can be relatively complex.

A standard turbo coder 100 is shown in FIG. 1. A block of k information bits is input directly to a first coder 102. A k bit interleaver 106 also receives the k bits and interleaves them prior to applying them to a second coder 104. The second coder produces an output that has more bits than its input, that is, it is a coder with rate that is less than 1. The coders 102, 104 are typically recursive convolutional coders.

Three different items are sent over the channel 150: the original k bits, first encoded bits 110, and second encoded bits 112. At the decoding end, two decoders are used: a first constituent decoder 160 and a second constituent decoder 162. Each receives both the original k bits, and one of the encoded portions 110, 112. Each decoder sends likelihood estimates of the decoded bits to the other decoders. The estimates are used to decode the uncoded information bits as corrupted by the noisy channel.

Sunday, May 29, 2016

Hickenlooper on Face the Nation: an inaccurate (and Whiggish) view of the cola wars?

Back in the year 2012, Colorado governor John Hickenlooper, in the context of a Presidential debate at the University of Denver, stated

“I think the attack ads, the just beating each other to a pulp, that gets put aside and that’s good. You never see it in private industry. Coke doesn’t do attack ads against Pepsi because then Pepsi would attack Coke and then Coke would counter attack and then people were buy fewer soft drinks. You dminish the product category. What we’re doing is diminishing the product category of democracy,” said Hickenlooper. “People don’t watch the news, they don’t read the newspaper and they don’t vote. This is our great experiement, the world’s great experiment, democracy. We’ve got to make sure we don’t turn people off.”

Whether attack ads are good or bad is one thing, but to say "private industry" never does attack ads is simply wrong. Attack ads
existed in the cola wars (and elsewhere in private industry) and there is no evidence of an inevitable progression and improvement.

**Just as a point on the power of advertising, from a post about the "Twentieth Century Limited" vs. the "Broadway Limited":

Why this difference?

It certainly is not due to superior equipment because the equipment is identically the same. It is not due to greater comfort, for if anything, it is more comfortable to travel on the Broadway because it is not crowded. You do not have to fight your way through a crowd to get into the diner, nor walk through an endless maze of sleepers to reach the observation car, only to find every seat taken. On the Broadway there is always plenty of room in the library car and it is seldom that you cannot get a seat on the observation platform.

Then why is it?

The answer is ADVERTISING.

The Century has been advertised from hill to hamlet the country over.

When the Century leaves the station in every seat there is a stamped, colored postcard of the “Finest Train in the World,” ready for you to mail to one of your friends, and you may be sure that nine-tenths of them are mailed. You can always think of some excuse to let some one know that you making the trip to New York on the Century.

The Pennsylvania Railroad crosses the AIIegheny Mountains. The New York Central travels along the valleys of the Hudson and Mohawk Rivers, but even such virtues as are attributed to the road-bed of the latter, because of the “sea-level route,” are largely imaginary and the result of advertising

CBS Sunday Morning on May 29, 2016: Memorial Day weekend

Charles Osgood introduced stories, noting Memorial Day weekend was well underway. Chris van Cleve did the cover story on road rage.1 in 3 people engage in road rage. Anthony Mason on the Monkees. Lee Cowan on reconciliation and return as to Japanese/World War II. Rita Braver on Jane Krakowski. Second Banana. Conor at Zion National Park. Headlines: Tropical Depression Bonnie--lots of rain. Heavy rain between Austin and Houston. Weather: 80s in northeast.

The road rage clip starts with an incident in Houston, Texas. AAA finds that half drivers think aggressive driving a problem. 1739 deaths. Mike McClosky is a professor at Temple University. Not like in grocery store, when someone cuts in express. 33.9 million Americans will hit the road this weekend. One in three drivers engage in some form of road rage. Examples with bicycle riders. In LA, ego is attached to vehicle. Blog: "L.A. Can't Drive" by Mike Chen. A lot of anger out there. To avoid rage: give yourself enough time to get to destination. Take a deep breath. Stevie van Arsdale works with ROARR (reaching out against road rage.

Second, Zion National Park. 1901, Muir's essay on national parks. 305 million saw national parks in 2015. Jeff Brady Bob at Zion National Park. Last five years 35$. Five national parks in Utah. The parks have become bucket list destinations. Last Memorial Day, Arches entrance shut down for two hours. Carrie Cahill of park service planning division. Possibility of permits or timed entry reservations.

Pulse: use of atomic bomb on Japan. 2015. 43% approve 44% disapprove

Almanac. May 29, 1914. Liner Empress of Ireland crashed in the St. Lawrence River. Empress sank in just 14 minutes. 1012 people lost their lives. Timewise, sandwiched between the Titanic and Lusitania disasters. Wikipedia notes: The ship reached Pointe-au-Père, Quebec (or Father Point) near the town of Rimouski in the early hours of 29 May 1914, where the pilot disembarked. Empress of Ireland resumed a normal outward bound course of about N76E, and soon sighted the masthead lights of Storstad, a Norwegian collier, on her starboard bow at several miles distant.

Rita Braver interviews Jane Krakowski. She even roller skates. 1963 show revival of "She Loves Me." She is now 47. Unbreakable Kimmy Schmidt ( Jacqueline White, ). The Barn Theater near Parsippany, NJ. Played "Tiny Tim." At 14, famous line in Vacation. Jane prides herself on her "Jersey Moxie." Played in Starlight Express. In 1997, Ally McBeal (Elaine Vassal ). The face bra.

Osgood on lifeguards. Our superheros by the shore. 95,000 rescues last year. Headley and Jeffries first lifeguards in 1893.

Osgood notes Obama visit to Japan. Lee Cowan talks about return of flags. Glenn Stockdale of Billings, Montana. His son Terry went through his footlocker, and found Japanese flags. Send flags back to Japan. Father Glenn said no. Leland Bud Lewis. 41st infantry division. Returning the flags as closure; you can't keep hating people. Keko in Washington, obone. So far, re-united about 60 flags. Yosoguso Kishi was owner of a Stockdale flag. Terry wanted to deliver flag personally in Japan. "Their father coming home."

Steve Hartman on Viet Nam veteran. John Colone. February 19, 1968. Shot three times and put in body bag. Curtis Washington. Tested the plantar reflex. John Cologne came back from the dead. 8 soldiers in platoon died that day. Now, John is asking others to adopt a Viet Nam veteran.

Anthony Mason on the Monkees. Peter Tork heard about audition from Stephen Stills, who was passed over. Brought the force of their characters. Monkees butted heads with Don Kirschner. This is the record; we don't need you. Fans wanted to see the Monkees live.
Third album, Headquarters, was their own. The pre-fab four. Like Leonard Nimoy really becoming a Vulcan. Nesmith started his own band. Tork did so in Connecticut. Dolenz and Tork are on tour for the 50th anniversary. New record is called "Good Times." Davy was the youngest, and went first. Daydream Believer. We'll tour until one of us drops, and then the other will tour as the Monkee.

Jan Crawford on Mitch McConnell. The face of obstruction? Book: "The Long Game." For most of us, success is the long road.
Had polio as a child. At age 13, moved to Louisville. "McConnell for President." Forty years in elective office. Alma mater: University of Louisville. Married Chao in 1993 on Ronald Reagan's birthday. McConnell says: This is no where near the most divisive period in American history. There are constraints. McConnell has warm words for Biden. Of Obama, it is grating to be lectured to. McConnell will not budge on Garland nomination. McConnell is now 74 years old. America is full of stories like mine. America is full of opportunities for those who don't quit.

David Edelstein on Alice, a big nothingburger. Movie: Weiner, on his mayoral bid. More like the Titanic. It's horrible, but you have got to watch. He is not a confident liar. Oscar Wilde: gossip made tedious by morality. "Really creepy."

Moment of nature not mentioned, but we leave you at Marietta National Cemetery

One recalls another May 29 anniversary:

On May 29, 1922, the United States Supreme Court ruled that organized baseball was not a business, but rather a sport, and thus did not violate antitrust laws.

In terms of issues about "venue selection," the plaintiff Federal League selected the court of Judge Kenesaw Mountain Landis, because of his reputation as a trust buster, but not considering that Landis was a big fan of the Chicago Cubs.

Also, on May 29, 1894, the guitar-zither was patented as US 520651.

Anton Karas used a concert zither for the theme in the 1949 movie The Third Man.
https://en.wikipedia.org/wiki/The_Third_Man_Theme

**Of something that happened on May 29, 2016

Vice President Joe Biden and former House Speaker John Boehner were both present at Notre Dame University's commencement ceremony on May 29 during which they shared the 2016 Laetare Medal.

Saturday, May 28, 2016

Pooley on the Gurry matter at WIPO

From Fox News:

“It's past time for all this craziness to stop,” declared James Pooley, a U.S. patent attorney and former top WIPO official who launched a formal complaint against Gurry last year, which led to the WIPO director general’s investigation.

“WIPO is an agency owned by the Member States who created it,” Pooley added in a statement to Fox News. “They are Mr. Gurry's employer, entitled to know the facts of his behavior so that they can make an informed decision about what to do. For the sake of the witnesses, of the decent and dedicated WIPO staff, and of WIPO's integrity as an institution, the Member States need to act now to regain control.”

The fact is, however, that Gurry’s ability to surprise, outmaneuver and stonewall WIPO’s supposed nation-state owners over the past several years has provided numerous examples of the profound lack of control exercised by countries over supposedly subordinate U.N. institutions—and the ability of U.N. bureaucrats to make up their own rules and methods of behavior.

Chronicle of Higher Education: "Another reason for the chronic plagiarism is the attitude that it doesn't matter"

Another reason for the chronic plagiarism is the attitude that it doesn't matter. I've been told by employees of the local copy shop that more than one student has had a paper faxed to them by their friends or parents. I asked the copy shop workers, who were also students at the college, why they didn't report this breach of the honor code, and they said they didn't know it was wrong and they certainly didn't think it was their responsibility. In other situations, students have said that they knew it was wrong, but insisted that it wasn't so bad and that, besides, everyone is doing it, and they'll never do it again. Right.

One observes that Joe Biden was caught plagiarizing a paper as a 1L at Syracuse Law School, given an F, and forced to re-take the course. Biden went on to become a U.S. Senator and then Vice-President.

As to --the attitude that it doesn't matter -- such attitude has existed for a LONG time.

Friday, May 27, 2016

ARUNACHALAM case informs practitioners of "what to do" following a new ground of rejection

Dr. Lakshmi Arunachalam owns U.S. Patent No.
5,778,178, which has been undergoing reexamination
since November 2008. In September 2014, the Patent
Trial and Appeal Board affirmed the rejection of claims 9–
16, but designated a new ground of rejection for claim 16.
Dr. Arunachalam elected to reopen prosecution of the
claims, after which the examiner issued a final rejection
in June 2015. Rather than appeal the examiner’s final
rejection to the Board, Dr. Arunachalam filed the instant
appeal. Because we lack jurisdiction to consider non-final
appeals from the Patent Office, we dismiss for lack of
jurisdiction.

As to "practice pointers"

“We have held that § 1295(a)(4) should be read to incorporate
a finality requirement.” Loughlin v. Ling, 684 F.3d
1289, 1292 (Fed. Cir. 2012) (citing Copelands’ Enters., Inc.
v. CNV, Inc., 887 F.2d 1065, 1067–68 (Fed. Cir. 1989) (en
banc)). Our adoption of a finality rule “finds strong support
both in the tradition of the federal courts system and
in sound public policy.” Copelands’ Enters., 887 F.3d at
1067 (citations omitted). “As indicated by the Supreme
Court, requiring a party to await a final decision and to
raise all claims of error in a single appeal ‘emphasizes the
deference that appellate courts owe to the trial judge,’
‘avoid[s] the obstruction to just claims that would come
from permitting the harassment and cost of a succession
of separate appeals,’ and ‘promot[es] efficient judicial
administration.’” Id. (quoting Firestone Tire & Rubber
Co. v. Risjord, 449 U.S 368, 374 (1981)). Thus, we lack
jurisdiction to hear a non-final appeal from the Patent
Office.
Here, there can be no doubt that the Patent Office’s
actions are non-final for the purposes of judicial review
and that Dr. Arunachalam’s appeal is premature. A
patent owner dissatisfied with an examiner’s rejection of
a claim in reexamination may proceed with a two-step
appeals process. First, pursuant to 35 U.S.C. § 134(b)
(2002), “[a] patent owner in any reexamination proceeding
may appeal from the final rejection of any claim by the
primary examiner to [the Board] . . . .” Second, if the
patent owner is dissatisfied with the Board’s final decision,
the patent owner may appeal the decision to this
court. 35 U.S.C. § 141 (2002) (“A patent owner . . . who is
in any reexamination proceeding dissatisfied with the
final decision in an appeal to the Board . . . under section
134 may appeal the decision only to the United States
Court of Appeals for the Federal Circuit.”).

A new ground of rejection, however, is not a final decision
for the purposes of judicial review. See 37 C.F.R.
§ 41.50. After a new ground of rejection, the patent owner
can either (1) reopen prosecution and, if the rejection
cannot be traversed, again appeal to the Board or (2)
pursue rehearing at the Board, after which an appeal to
this court may be filed. See id. Here, Dr. Arunachalam
elected to reopen prosecution and the examiner issued a
final rejection. Pursuant to § 134(b), Dr. Arunachalam
may appeal the examiner’s decision to the Board. And
only after the Board issues a final decision can we exercise
jurisdiction to review the Board’s decision.

Netzer lost his appeal to the CAFC of an adverse summary judgment of non-infringement in favor of Shell Oil:

David Netzer Consulting Engineer LLC (“Netzer”)*
appeals from the decision of the United States District
Court for the Southern District of Texas granting summary
judgment of noninfringement of the asserted claims
of U.S. Patent 6,677,496 (“the ’496 patent”). David Netzer
Consulting Eng’r LLC v. Shell Oil Co., No. 4:14-cv-00166,
ECF No. 45 (S.D. Tex. Aug. 26, 2015) (“Decision”). For the
reasons that follow, we affirm.

The relevant claim was to process for the coproduction of ethylene and
purified benzene and a relevant claim element was:

fractionating the pyrolysis gasoline to form a
purified benzene product comprising at least
about 80 wt % benzene.

In the absence of anything else, one might think "fractionating" would
include ANY process to create fractions. Here, that argument did NOT
work:

Shell argued that the term “fractionating”
should be construed to mean “conventional distillation,
i.e., separating compounds based on difference in their
boiling points,” which excludes extraction, i.e., separating
compounds based on solubility differences. Shell argued
that the patentee disclaimed extraction in the specification
and prosecution history. According to Shell, its
accused process does not meet the fractionating step
because it uses extraction—more specifically, the Sulfolane
process developed by Shell in the 1960s—to form a
benzene product with 99.9% purity. Netzer responded
that “fractionating” should be construed to mean “separating
a chemical mixture into fractions, no matter the
process units used.”

(...)

We agree with Shell that the claim term “fractionating”
in this patent means separating compounds based on
differences in boiling points, i.e., distillation, which excludes
extraction, such as in the Sulfolane process. The
specification repeatedly and consistently uses “fractionating”
or “fractionation” to describe separating petrochemicals
based on boiling point differentials. Moreover,
importantly, the patentee made clear and unmistakable
statements in the intrinsic record, distinguishing the
claimed invention from and disclaiming conventional
extraction methods that produce 99.9% pure benzene.

Wednesday, May 25, 2016

Aqua Products, Inc. (“Aqua”) appeals from the final written decision of the Patent Trial and Appeal Board (“Board”) in an inter partes review (“IPR”) of U.S. Patent No. 8,273,183 (“’183 patent”). The Board denied Aqua’s motion to substitute claims 22–24. Aqua challenges the Board’s amendment procedures, which require the patentee to demonstrate that the amended claims would be patentable over the art of record. We affirm.

The issue in the case concerned amending the claims:

In its motion to amend, Aqua argued that the combination of Henkin and Myers does not render the substitute claims obvious because it does not suggest the vector limitation. J.A. 2289–91. Although Aqua referenced the other added limitations, it did not argue that those other limitations would have been non-obvious in light of Henkin and Myers. Regarding objective indicia, Aqua characterized its commercial embodiments as “successful” and it implied that Zodiac may have copied the design, but Aqua did not argue that these objective indicia were tied to the vector limitation or that they otherwise demonstrated that the vector limitation was non-obvious. J.A. 2288. The Board denied Aqua’s motion to amend. It reasoned that the vector limitation would have been obvious because Henkin teaches positioning the jet at an angle that satisfies the vector limitation.

The appeal

Aqua appeals the Board’s denial of its motion to amend. Aqua argues that Board regulations requiring the patentee to demonstrate that an amended claim is patentable over the art of record are unsupported by statute, and that the Board’s interpretation of those regulations impermissibly places the burden on the patentee to show non-obviousness. Moreover, Aqua argues that the Board abused its discretion by denying the motion to amend without considering all the new limitations and the objective indicia of non-obviousness, as would be required for invalidating an original claim.

Aqua's statutory argument was dead on arrival and the abuse of discretion argument also failed

Our precedent has upheld the Board’s approach of allocating to the patentee the burden of showing that its proposed amendments would overcome the art of record. In Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307−08 (Fed. Cir. 2015), we upheld the Board’s interpretation of its regulations, requiring the patentee to establish that proposed amendments would overcome the art of record. See also Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353, 1363 (Fed. Cir. 2015). In Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1333−34 (Fed. Cir. 2016), we further held that the Board’s regulations concerning motions to amend and its interpretation thereof are consistent with the AIA’s statutory framework, even though the framework generally places the burden of proving unpatentability on the IPR petitioner. Given our precedent, this panel cannot revisit the question of whether the Board may require the patentee to demonstrate the patentability of substitute claims over the art of record. The only issue left open for our consideration is whether the Board abused its discretion by failing to evaluate objective indicia of non-obviousness and various new limitations in the proposed claims, even though Aqua did not argue that those indicia and limitations distinguish the proposed claims over the combination of Henkin and Myers. We find no abuse of discretion.

Monday, May 23, 2016

Nova obtains a "win" on supplemental damages in the Dow case

The US Supreme Court declined to hear the Dow case, which left intact the decision of the Federal Circuit on
supplemental damages.

Reuters reported:

At issue were $28 million in supplemental damages plus interest that a federal judge awarded to Dow for Nova's infringement of its patents from January 2010 to October 2011, when the patents expired.

The court's action does not affect the $61 million in damages that a jury in 2010 awarded to Dow for Nova's infringement of the patents prior to 2010. Dow is in the process of merging with Dupont

link: http://www.reuters.com/article/us-usa-court-dow-idUSKCN0YE1QK

** A relevant part of the CAFC decision, as to "how" the supplemental damage award
could be reviewed:

But the exception of course does not apply
if the proceeding has reached the stage of final judgment.
See Mendenhall, 26 F.3d at 1582 (Fed. Cir. 1994). Here,
the supplemental damages proceeding had not been
concluded at the time of Nautilus.

(...)

The change in law exception applies whether the
change in law occurs while the case is before the district
court or while the case is on appeal. See Spiegla, 481 F.3d
at 964 (7th Cir. 2007) (holding that defendants had not
waived challenge to holding in first appeal where issue
not raised on remand in district court or initial briefing
because intervening decision was issued after appellate
briefing); Mendenhall, 26 F.3d at 1583 (law of the case did
not apply where new decision issued while case on appeal);
Morris v. Am. Nat’l Can Corp., 988 F.2d 50, 51–53
(8th Cir. 1993) (law of the case did not apply where, after
first appeal and decision on remand by district court,
Supreme Court case changed prevailing law); Wilson, 791
F.2d at 154, 157 (exception to issue preclusion applied
where intervening decision issued while case pending
before this court).

It was the "supplemental damages" that had not reached the stage of
final judgment, and the CAFC found Dow's claims invalid for indefiniteness,
so the supplemental damages evaporated.

Sadly, for Nova, Nautilus came too late as to the initial decision:

Third, as we now discuss, our original decision would
have been different under the new Nautilus standard.

As to the impact of Nautilus on this case:

The question is whether the existence of multiple
methods leading to different results without guidance in
the patent or the prosecution history as to which method
should be used renders the claims indefinite. Before
Nautilus, a claim was not indefinite if someone skilled in
the art could arrive at a method and practice that method.
Exxon, 265 F.3d at 1379. In our previous opinion, relying
on this standard, we held that the claims were not indefinite,
holding that “the mere fact that the slope may be
measured in more than one way does not make the claims
of the patent invalid.” Dow, 458 F. App’x at 920. This was
so because Dow’s expert Dr. Hsiao, a person skilled in the
art, had developed a method for measuring maximum
slope. See id. at 919–20.

Sunday, May 22, 2016

UChicago chem grad student expelled for ghost writing

The University of Chicago Maroon discusses a report mentioning an ethical issue with a chemistry grad student who was ghost writing:

The report only included one expulsion, which was given to a Chemistry doctoral student who was found to have sold “ghostwriting services and academic work, supposedly done by current students in the University” to parties unaffiliated with the University.

There was also an issue with a law student:

Two of the four cases involved a student in the Law School who was issued a No-Contact Directive, mandatory counselling, and restrictions on course and event registration, after being found responsible for dating violence against another student. The same individual was later suspended for one quarter after failing to follow the directive.

After decades of absence from the University of Chicago and a period commuting to classes at other universities, the University of Chicago’s Army Reserve Officers’ Training Corps (ROTC) is reestablishing itself on campus.

The American Astronomical Society takes firm stand AGAINST self-plagiarism

The position of the American Astronomical Society (AAS) against self-plagiarism is clear, as seen from a recent
retraction of a self-plagiarized journal article.

Prompted by an inquiry sent to us on 14 November 2015, The Astrophysical Journal (ApJ) has conducted an editorial review of the publication of “Axisymmetric, Nonstationary Black Hole Magnetospheres: Revisited” by Yoo Geun Song & Seok Jae Park, 2015 October 10, ApJ, Vol. 812, No. 1, Art. 8. Ethan Vishniac, the ApJ Editor-in-Chief, supervised Dr. Park’s dissertation research at the University of Texas in the 1980s, so Dr. Vishniac recused himself. This statement includes the review's findings and recommendations.

Plagiarism is the act of reproducing text or other materials from other papers without properly crediting the source. Such material is regarded as being plagiarized regardless of whether it is cited literally or has been modified or paraphrased. Plagiarism represents a serious ethical breach, and may constitute legal breach of copyright if the reproduced material has been previously published. This includes repeating text from previously published papers by the author or authors (i.e., “self-plagiarism”). Authors who wish to quote directly from other published work must fully cite the original reference, and include any cited text in quotation marks. AJ and ApJ authors are discouraged from including such direct quotations in papers, apart from rare instances when such a quotation is appropriate for historical reasons. Figures may only be reproduced with permission and must be fully cited in the figure caption, following guidelines that are posted on the ApJ and AJ websites.

In the "small wonders" section done by Susan Spencer, Q-tips were discussed. As Wikipedia notes:

The cotton swab is a tool invented in the 1920s by Leo Gerstenzang after he attached wads of cotton to toothpicks. His product, which he named "Baby Gays", went on to become the most widely sold brand name, "Q-tips", with the Q standing for "quality". The term "Q-tips" is often used as a genericized trademark for cotton swabs in the USA and Canada. The Q-tips brand is owned by Unilever and had over $200 million in sales in the US in 2014.[

Another invention in small wonders was the take-out box for Chinese food. Spencer noted: And, it's a uniquely American creation. It was patented in 1894 by Chicago inventor Frederick Weeks Wilcox.

Friday, May 20, 2016

Some IP issues in the vehicle industry: from the Selden patent to the "Jake Brake"

Relevant to the topic of George Selden as a patent troll victimizing, among others, automaker Henry Ford, LBE wrote an article titled "Looking Backward" which appears at page 20 of Intellectual Property Today [IPT] in June 2001, which is about fifteen years prior to the present May 2016.

At the time of the litigation, the "Selden patent" had passed through the hands of electric car makers, and ended up in the control of an association of prior troll victims, who were competitors of Ford. Ford won on non-infringement grounds (not on invalidity of the "Selden patent") and at the time of Ford's victory, the Selden patent had about one year of life left. The Ford decision is reported at Columbia Motor Car Co. v. C. A. Duerr, 184 F. 893 (CA 2 1911).

Of relevance to other vehicles, the first Indianapolis 500 was in the year 1911. Ray Harroun’s Marmon Wasp was the winner, and a member of the pit crew was a man named Clessie Cummins. Indiana banker William Irwin was one of a Harroun’s backers and Irwin hired Cummins as a chaffeur and mechanic. In the year 1912, gasoline, in contrast to kerosene, was not readily available and Cummins began experimenting with kerosene as a fuel. By 1920, Cummins was producing a diesel engine, based on IP of Rasmus Martin Hvid. In 1931 a vehicle with a modified Cummins Model U engine, the Cummins-Duesenberg, finished the Indianapolis 500 with an average speed of 86.170 mph and is the only vehicle to complete the Indy 500 without a stop.

There is an interesting CURRENT ip issue related to Cummins, associated with the name "jake brake." Cummins developed the idea of the compression release engine brake in 1954, and tried to interest diesel makers, with little success. However, the Jacobs Manufacturing Company was interested. Some of these compression brakes may make loud noises and some communities have prohibitions of the form "no jake brakes." BUT, as wikipedia notes,
Jacobs claims that the use of the term "Jake Brakes" on signs prohibiting engine retarding brakes violates their trademark and discriminates against Jacobs brand products. IPBiz notes that Jacobs needs to fight uses of "Jake Brake" that would tend to make the term generic for all compression brake systems.

The website "business insurance" notes

The company's [Jacobs] success at enforcing its "Jake Brakes" trademark has gone beyond just challenging its use on highway signs. Mr. Stawski said Jacobs Vehicle Systems has raised the issue of inappropriate use in cases involving musical groups, race horses and snowboards, among others.

And, as it looks to protect its trademark, Mr. Stawski said his company has found the Internet to be a powerful tool in identifying possible violations.

In addition to explaining what Jake Brakes are and how they work, the Jacobs Vehicle Systems' Web site discusses the trademark infringement issue and asks visitors to the site to e-mail the company with information about any "brand-specific" street signs they've seen.

**A post at VLCT (Vermont League of Cities and Towns) highlights the issues involved:

“Jake brakes” are a type of engine compression brake used on heavy duty, diesel-powered trucks.

The term, “Jake brake” is actually a registered trademark for the brakes
made by the Jacobs Vehicle Systems Company. Therefore, posting signs that specifically
prohibit “Jake brakes” may be a violation of trademark law and/or may be considered
discriminatory since they would apply only to engine compression brakes made by
Jacobs and not to those made by other companies.

Some municipalities have a problem with noisy trucks, and have asked if they can post
signs prohibiting the use of engine brakes. The obvious problem with banning any type
of brake is the safety issue. Is it wise to prohibit the use of a safety system such as
brakes?

The use of any engine compression brake without a muffler or with a defective or
“gutted” muffler will create excessive noise. Vermont prohibits the operation of a motor
vehicle on a public highway without a serviceable muffler. Any vehicle can be stopped
and inspected for a defective muffler. If there is a problem, the driver can be issued a
defective equipment ticket, just as he or she could for a missing taillight.

Federal regulations require that trucks emit less that 80 decibels of noise when they drive
by (as measured from 50 feet). Therefore, towns may also adopt noise ordinances with a
provision for noisy mufflers. The problem here would be the need for a decibel meter to
document actual noise levels.

So, the answer is not to ban “Jake brakes,” but instead to address the noise issue as
specifically as possible, without compromising safety.

link: http://www.vlct.org/assets/Resource/ATL/2000/atl_00_04a.pdf

All brakes made by Jacobs Vehicle (and trademarked as such) do not make noise, so a total
ban on "Jake Brakes" likely would exceed regulatory authority delegated to towns for health/safety issues
and would separately be constitutionally overbroad.

Apart from the trademark issue, is a ban on the use of compression brakes generally enforceable?
The use of compression brakes is not synonymous with the presence of noise.

[Purely for debate: does the Federal regulation on noise pre-empt local regulation, in view of the
safety issues? Likely not. Of trademarks, one notes that one can use a trademarked term in the context
of an accurate statement, such as "This perfume costs less than Chanel Number Five."]

**There was an issue of prosecution disclaimer that was
NOT addressed:

Moreover, we do not reach the
issue of prosecution disclaimer in resolving the parties’
appeals. We thus do not
address the Director’s arguments.

As to claims 16 and 17, the CAFC found PTAB failed
to provide articulated reasoning:

We agree that the Board failed to explain why a per-
son of ordinary skill in the art would “fixedly secure” the
motor in Mack. Our precedent requires that the Board
explain a rationale why a person of ordinary skill would
have modified Mack’s motor. See Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009) (explaining that the skilled artisan’s
motivation “should be made explicit”).

(...)

Our precedent required that the Board explain why one of skill
in the art would have adapted or replaced Mack’s motor mounting yoke
to ensure that the motor did not move relative to the motor mounting structure.
The Board did not do so

Perverse incentives for plagiarism from " jail time reduction " for publishing program?

Apparently, in Romania, prison inmates can get reductions in sentences for writing books or publications while in prison. One might suspect that this might offer inmates an incentive to plagiarize.

A recent "scandal" involved an inmate [named Copos] accused of plagiarizing a thesis [of a student Parfene]. The details are a bit curious:

The scandal started when a young Romanian historian, Catalin Parfene, said that Copos had plagiarized his dissertation, which he had presented at Bucharest University’s History Faculty in 2005. Moreover, the professor who helped Parfene with his paper also wrote the preface to Copos’ book.

Hmmm, in the past IPBiz has discussed students accusing their advisors of stealing patent rights, but therein the professor was directly appropriating the work of the student. A twist would be the professor transferring the work to a third party.

Of a Stanford student complaining, see the IPBiz post
http://ipbiz.blogspot.com/2009/06/stanford-phd-student-sues-stanford.html

And, of a patent application from prison, recall the Jonathan Nyce matter:

DIAMOND COATING TECHNOLOGIES, LLC, loses its appeal at the CAFC

The CAFC explores the question of transfer of all substantial patent rights in the appeal by DIAMOND COATING TECHNOLOGIES, LLC.

As to the basics of transfer of patent rights, the CAFC noted

Agreements transferring patent rights occur by assignment or license. “An assignment of patent rights operates to transfer title to the patent, while a license leaves title in the patent owner” and transfers something less than full title and rights. Minco, Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109, 1116 (Fed. Cir. 1996) (citation omitted). “To create an assignment, a contract must transfer: (1) the entire exclusive patent right, (2) an undivided interest[2] in the patent rights, or (3) the entire exclusive right within any geographical region of the United States.” Id. at 1117 (citation omitted). “An agreement that does not transfer one of these three interests is merely a license.” Id. (citation omitted).

We treat an agreement granting patent rights as a contract and interpret its terms consistent with the choice of law provision in the agreement in question. See Alfred E. Mann Found. for Sci. Research v. Cochlear Corp., 604 F.3d 1354, 1359 (Fed. Cir. 2010). The PATA states that New York law governs the interpretation of its terms, J.A. 219, and under that law we review the District Court’s interpretation of the PATA de novo, Dreisinger v. Teglasi, 13 N.Y.S.3d 432, 435 (App. Div. 2015). In this case, Diamond asserts “patentee” status only as the alleged recipient of “the entire exclusive patent right” (not an undivided interest or a geographically limited entire exclusive right). On its face, “the entire exclusive patent right” must include all substantial rights in the patent. We have not allowed labels to control by treating bare formalities of “title” transfer as sufficient to determine that an “assignment” of the entire exclusive right has occurred. Rather, we have explained that, “[t]o determine whether a provision in an agreement constitutes an assignment or license, one must . . . examine the substance of what was granted.” Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.p.A., 944 F.2d 870, 874 (Fed. Cir. 1991); see Waterman v. Mackenzie, 138 U.S. 252, 256 (1891); Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1378 (Fed. Cir. 2000).

We therefore must ask whether Diamond received all substantial rights in the patents-in-suit or, instead, whether Sanyo retained substantial rights. Unless Diamond received all substantial rights in the patents-in-suit at the time it filed suit in the District Court, it was not a “patentee” (allegedly without a joint owner). If Diamond was not a patentee, it could not bring this suit by itself. And since Diamond did not take the opportunity provided by the District Court to join Sanyo, the District Court properly dismissed the suit. See, e.g., Alfred E. Mann, 604 F.3d at 1360.

As to the original agreement, the CAFC agreed with the district court that the original agreements did NOT transfer all substantial rights.

A separate issue was a later agreement:

Following the District Court’s decision in Diamond, Diamond and Sanyo executed nunc pro tunc agreements,6 purportedly “to clarify the parties’ original intent; namely, to grant full ownership of the patents in question to [Diamond].” Appellant’s Br. 12. Diamond asserts these nunc pro tunc agreements effectively establish Diamond’s status as a patentee. Id. at 43. We conclude they do not.

Lemley wins in TLI case

From the decision:

TLI Communications LLC alleges that the defendants
infringe a patent relating to a method and system for
taking, transmitting, and organizing digital images. The
district court dismissed the complaint after concluding
that the patent-in-suit fails to claim patent-eligible subject
matter under 35 U.S.C. § 101, and that, in the alternative,
claims 1, 25, and their dependent claims are
invalid for failing to recite sufficient structure as required
by 35 U.S.C. § 112 ¶ 6. Because we agree with the district
court that the patent-in-suit claims no more than the
abstract idea of classifying and storing digital images in
an organized manner, we affirm the district court’s judgment
and do not reach the § 112 ¶6 issue.

From within the decision

And
the specification’s emphasis that the present invention
“relates to a method for recording, communicating and
administering [a] digital image” underscores that claim
17 is directed to an abstract concept. ’295 patent, col. 1
ll. 10–12. TLI’s characterization of the claimed invention
also supports our conclusion at step one. In its briefs, TLI
essentially parrots the disclosure of the ’295 patent,
asserting that claim 17 is “directed to a method for recording
and administering digital images.” Appellant’s Br. 28.

We recently clarified that a relevant inquiry at step
one is “to ask whether the claims are directed to an improvement
to computer functionality versus being directed
to an abstract idea.” See Enfish, LLC v. Microsoft
Corp., No. 2015-2044, slip op. at *11 (Fed. Cir. May 12,
2016).

(...)

The specification does not describe a new telephone, a
new server, or a new physical combination of the two.
The specification fails to provide any technical details for
the tangible components, but instead predominately
describes the system and methods in purely functional
terms. For example, the “telephone unit” of the claims is
described as having “the standard features of a telephone
unit,” id. at col. 5 ll. 54–58, with the addition of a “digital
image pick up unit for recording images,” id. at col. 5 ll.
58–61, that “operates as a digital photo camera of the
type which is known,” id. at col. 6. ll. 1–2. Put differently,
the telephone unit itself is merely a conduit for the
abstract idea of classifying an image and storing the
image based on its classification. Indeed, the specification
notes that it “is known” that “cellular telephones may be
utilized for image transmission,” id. at col. 1 ll. 31–34,
and existing telephone systems could transmit pictures,
audio, and motion pictures and also had “graphical annotation
capability,” id. at col. 1 ll. 52–59.

(...)

For these same reasons, the claims are not directed to
a solution to a “technological problem” as was the case in
Diamond v. Diehr, 450 U.S. 175 (1981). See OIP Techs.,
788 F.3d at 1364 (“[W]e must read Diehr in light of Alice,
which emphasized that Diehr does not stand for the
general proposition that a claim implemented on a computer
elevates an otherwise ineligible claim into a patenteligible
improvement.”). Nor do the claims attempt to
solve “a challenge particular to the Internet.” DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–
57 (Fed. Cir. 2014); cf. Intellectual Ventures I, 792 F.3d at
1371 (because the patent claims at issue did not “address
problems unique to the Internet, . . . DDR has no applicability.”).
Instead, the claims, as noted, are simply directed to
the abstract idea of classifying and storing digital images
in an organized manner. Consistent with the Supreme
Court’s rejection of “categorical rules” to decide subject
matter eligibility, Bilski v. Kappos, 561 U.S. 604, 610
(2010), we have applied the “abstract idea” exception to
encompass inventions pertaining to methods of organizing
human activity. See, e.g., Intellectual Ventures I, 792 F.3d
at 1367 (finding the claim at issue “not meaningfully
different from the ideas found to be abstract in other
cases before the Supreme Court and our court involving
methods of organizing human activity”).

Monday, May 16, 2016

In an approach for determining printability of an electronic file, a computer electronically receives a file for printing. The computer parses the file for one or more of text, images, and formatting indicative of potential copyrighted material. The computer, in response to identifying any text, images, or formatting indicative of potential copyrighted material, identifies potential copyrighted material within the file. The computer determines whether the file may be printed based, at least in part, on the identified potential copyrighted material. In another approach for determining printability of an electronic document, a computer electronically receives a document for printing. The computer locates attributes associated with the document and stored in a separate database, which includes one or more of the following: ownership, licensing information, printability, and number of prints allowed. The computer determines the document is printable based on the attributes and prints the document

and first published claims

1. A method for determining printability of an electronic file, the method comprising: electronically receiving a file for printing; parsing the file for one or more of text, images, and formatting indicative of potential copyrighted material; responsive to identifying any text, images, or formatting indicative of potential copyrighted material, identifying, by one or more computer processors, potential copyrighted material within the file; and determining, by one or more computer processors, whether the file may be printed based, at least in part, on the identified potential copyrighted material.

2. The method of claim 1, wherein text indicative of copyrighted material include keywords, ISBN numbers, and ISSN numbers; wherein images indicative of copyrighted material include copyright symbols and barcodes; and wherein formatting indicative of copyrighted material includes use of stanza, drop cap based print, and text in columns.

3. The method of claim 1, wherein identifying the potential copyrighted material within the file comprises, based on location within the file of the identified text, images, or formatting indicative of potential copyrighted material, selecting at least one portion of the file corresponding to the location.

4. The method of claim 1, wherein determining whether the file may be printed based, at least in part, on the identified potential copyrighted material comprises: matching at least a portion of the identified potential copyrighted material to approved material, wherein approved material comprises one or both of: material to which a copyright or license is owned by a designated entity and material which has been designated as printable.

5. The method of claim 1, wherein determining whether the file may be printed based, at least in part, on the identified potential copyrighted material comprises: searching one or more online resources for the potential copyrighted material; and responsive to failing to match the potential copyrighted material to existing material, determining that the file is printable.

From US 20160132897, for which the inventors are listed as being from India

Note also published US application 20160132276 with first published claims

12. A method for determining printability of an electronic document, the method comprising: electronically receiving a document for printing; locating attributes associated with the document and stored in a separate database, wherein the attributes include one or more of the following: ownership, licensing information, printability, and number of prints allowed; determining that the document is printable based on the attributes; and printing the document.

13. The method of claim 12, wherein locating the attributes associated with the document comprises matching one or more attributes of a set of attributes associated with the document with embedded attributes of the document, including one or more of: document title, version number, date of creation, and text.

14. The method of claim 12, wherein determining that the document is printable comprises at least one of the following: determining that the printability attribute indicates that the document in printable; determining that the ownership attribute indicates that the document is owned by a designated acceptable entity; and determining that the licensing information attribute indicates the document is licensed by a designated acceptable entity.

15. The method of claim 14, wherein determining that the document is printable further comprises: determining that the number of prints allowed is greater than zero.

16. The method of claim 15, further comprising, subsequent to printing the document, reducing the number of prints allowed by one.

17. The method of claim 12, further comprising: subsequent to determining that the document is printable based on the attributes, determining that a user associated with sending the document for printing is authorized to print.

18. The method of claim 17, wherein authorized users are indicated by one or more additional attributes associated with the document.

Sunday, May 15, 2016

CBS Sunday Morning on May 15, 2016

Charles Osgood introduced the stories for May 15, 2016. The news headlines started with the bus crash near Laredo, Texas.

Osgood introduced the cover story by Mark Strassman on gender/bathroom issues. North Carolina public bathrooms. Match the gender on their birth certificate. Obama: the laws that they passed there are wrong. How to balance privacy and equality. McGrory sued the federal government. A court rather than a federal agency should tell the state what the law requires. 34 states have proposed bathroom bills. Free exercise of religion law passed under Clinton in 1993. . Marcie Hamilton of UPenn Law on RIFRA. Arlene's Flowers in Richland, Washington. Ingersoll asked for flowers for gay wedding. Alliance Defending Freedom. Are there rights to discriminate? Joaquin Cartena in North Carolina.

Milepost. Money left behind at airport security totaled more then $765K last year.

Postcard from Morocco by Jonathan Vigliotti Elixir. 80 miles west of Mrracksh is Essaouira. Argan oil. Goats in trees. Goats eat nuts; nuts have to be collected by hand. 40 hours of work to make one liter of oil. Liquid gold. One liter of oil sells for $300.

Fred Newman interviewed by Jane Pauley. Dolphins doing the Gettysburg Address. Lives in Connecticut. Grew up in LaGrange, GA in the 1950s. Doug from the 1990s. Grog swallowing a wedding band. Practical Magic.

CBS noted the deaths of William Schallert, Mark Lane, Susanah Jones.

Lee Cowan on Dylan Rizzo in just keep goin'. At age 19, Dylan hit black ice and ran into a telephone pole. Taken to Mass. Gen. Hospital. Was in vegetative state. Spaulding Rehabilitatve Hospital: issue of too quick judgment on vegetative statee. Lynnfield.
Suggestion that 15% in vegetative state may recover.

Steve Hartman in Daytona Beach. Girly-girl 101.

Rita Braver on Rachel Maddow. Lead in drinking water. TRMS special report. Her goal: to make you really listen. Story telling is fun for me. First openly gay American to host a national news show. Maddow graduated from Stanford. Lives in Manhattan apartment. By 2005, hosted show on Air America. Leads staff meeting like a general planning a battle. Top rated show on MSNBC. The universe giving a one finger salute.

Mo Rocca will be the MC of the National Geography Bee on May 27, 2016.

Saturday, May 14, 2016

The term “churrascos” is generic for restaurant services

The Board’s decision contains no harmful legal error, and the Board’s finding that the mark is generic is supported by substantial evidence. We affirm.

Of the generic issue:

The PTO disputes Cordua’s contention that the ’321 Registration had achieved incontestable status at the time of appeal to the TTAB. We need not address this question, because even if the earlier registration were incontestable, incontestability is irrelevant to the question of genericness. Section 15(4) of the Lanham Act mandates that “no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.” 15 U.S.C. § 1065(4). “[A] registered mark may be canceled at any time on the grounds that it has become generic.” Park ’N Fly, 469 U.S. at 194.

Of foreign terms:

“Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation . . . .” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1351 (Fed. Cir. 2009). Because “churrasco” is a common word in Spanish and Portuguese and because the ’191 Application itself concedes that “churrascos” means “barbecue,” the PTO would have been justified in translating “churrascos” into “barbecue” and
subsequently determining whether the term “barbecue” is generic when applied to restaurant services. Indeed, the examiner aptly remarked that “a foreign equivalent of a generic English word is no more registrable than the English word itself.” J.A. 71. But the examiner, and the Board, did not rely here on the doctrine of foreign equivalents. Instead, the examiner and the Board found that “churrasco” is used in the English language to refer to grilled meat. The evidence before the Board included, inter alia, three Englishlanguage dictionaries that define “churrasco” as grilled meat. See Cordua, 2014 WL 1390504, at *3. Two of the dictionaries specify that the meat is steak or beef. Id. The dictionaries constitute evidence that “churrasco” is a generic English-language term for grilled meat, especially grilled steak. Cordua essentially concedes this point. In its brief, Cordua concedes “‘churrasco’ can be used as a noun meaning grilled steak specially prepared in the churrasco style.” Appellant’s Br. at 47. However, Cordua contends that the addition of the “S” at the end of CHURRASCOS makes the term non-generic. That is, while Cordua concedes that “churrasco” describes a grilled steak, it argues that adding an “S” changes the term’s meaning because “churrascos” is not the proper pluralization of “churrasco” in Spanish. While each trademark must always be evaluated individually, pluralization commonly does not alter the meaning of a mark. See In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA 1969); Wilson v. Delaunay, 245 F.2d 877, 878 (CCPA 1957). Since “churrascos” is an English-language term, there is nothing in the record to indicate that the addition of the “S” at the end alters its meaning (beyond making the word plural).

Watson Laboratories, Inc. (“Watson”) appeals the final judgment of the United States District Court for the District of Delaware holding that claim 4 of U.S. Patent No. 6,441,168 (the “’168 patent”) is not invalid under the on-sale bar of 35 U.S.C. § 102(b) (2006).1 See Merck & Cie v. Watson Labs., Inc., 125 F. Supp. 3d 503 (D. Del. 2015) (“District Court Decision”). For the reasons discussed below, we reverse

The claim in question was to a composition:

“A crystalline calcium salt of 5-methyl-(6S)-tetrahydrofolic acid with 2 theta values of 6.5, 13.3, 16.8 and 20.1 (Type I) said crystalline salt having a water of crystallization of at least one equivalent per equivalent of 5-methyltetrahydrofolic acid.”

As to contract law, and evidence:

A similar analysis applies here. Although Buchholz testified that Merck would not have sold MTHF to Weider without first resolving certain safety and liability issues, J.A. 1291–95, his post hoc testimony cannot override what was “abundantly plain from the price, quantity, and delivery terms,” Cargill, 476 F.3d at 1370, on the face of Martin’s September 9, 1998, fax. Simply put, Buchholz’s testimony—which he gave in May 2015 about events occurring nearly seventeen years before—does not supersede the contemporaneous documentary evidence. See Linear Tech., 275 F.3d at 1053 (explaining that under “general principle[s] of contract law . . . the parties’ objective, expressed intent—not their secret, subjective intent—controls whether a bargain has been struck”); Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 496, 498–99 (Fed. Cir. 1992) (concluding that an inventor’s affidavit regarding events occurring many years before was entitled to little weight in the on-sale bar analysis).

Monday, May 09, 2016

INTELLIGENT BIO-SYSTEMS, INC. loses its appeal against Illumina at the CAFC

Intelligent Biosystems [IBS} is the appellant in an appeal to the CAFC from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-00517 concerning Illumina's US Patent 7,566,537 .

The unsuccessful argument of IBS

Based on the teachings of
Tsien and Zavgorodny, IBS argued “that an ordinary
artisan, ‘to improve the efficiency, reliability, and robustness
of the sequencing by synthesis method taught in
Tsien, would have been motivated to use other protecting
groups that meet the criteria of Tsien, such as the azidomethyl
group taught by Zavgorodny.’” Id. (citation
omitted). In addition to contending that an ordinary
artisan would be motivated to combine these references,
IBS separately asserted that an ordinary artisan would
have a reasonable expectation of success in meeting the
limitations of the claimed invention by combining Tsien
and Zavgorodny. S

The Board and the CAFC sided with Illumina:

Illumina disagreed with IBS, and argued that an ordinary
artisan would not expect the azidomethyl group of
Zavgorodny to meet the specific criteria of Tsien or Ju. In
particular, Tsien requires “quantitative and rapid removal”
of the protecting group, which it understands “to mean
essentially 100% removal.” Intelligent Bio-Sys., Inc., 2015
WL 996355, at *5. Prior art of record, however, “demonstrates
that an ordinary artisan would have expected
Zavgorodny’s azidomethyl group to be removed at a much
lower efficiency than required by Tsien’s methods.” Id.
That prior art reference is known as Loubinoux. See J.A.
971–87 (Bernard Loubinoux et al., Protection of Phenols
by the Azidomethylene Group Application to the Synthesis
of Unstable Phenols, 44 TETRAHEDRON 6055 (1988)).
Loubinoux reports a 60–80% removal efficiency for azidomethyl
groups from phenols using triphenylphosphine.
Intelligent Bio-Sys., Inc., 2015 WL 996355, at *7, *10, *12;
J.A. 974–75. 60–80% removal is not quantitative removal
within the meaning of Tsien or Ju.
Ultimately, the Board credited Illumina’s argument
that, given Loubinoux, IBS “has not shown, by a preponderance
of the evidence, that an ordinary artisan would
have considered it obvious to use Zavgorodny’s azidomethyl
group as the 3′ hydroxyl protecting group in Tsien’s
processes.” Id. at *5.

The Board cited KSR:

(...) the requirement for a
reasonable expectation of success:
[A] conclusion of obviousness requires a reasonable
expectation of success:
When there is a design need or market
pressure to solve a problem and there are
a finite number of identified, predictable
solutions, a person of ordinary skill has
good reason to pursue the known options
within his or her technical grasp. If this
leads to the anticipated success, it is likely
the product not of innovation but of ordinary
skill and common sense. In that instance
the fact that a combination was
obvious to try might show that it was obvious
under § 103.
[KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007)] (emphases added).

As the Court of Appeals for the Federal Circuit
has explained, “[a]lthough predictability is a
touchstone of obviousness, the ‘predictable result’
discussed in KSR refers not only to the expectation
that prior art elements are capable of being
physically combined, but also that the combination
would have worked for its intended purpose.”
Depuy Spine, Inc v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (citations
omitted).
Id. at *6. T

There were some procedural issues related to the reply brief
of IBS, including:

In this way, the Board found, IBS ran afoul of § 42.6(a)(3) by
improperly incorporating by reference arguments and
evidence from the expert declaration into the reply brief.

The CAFC did not endorse the Board's analysis of
"reasonable expectation of success"-->

The reasonable expectation of success requirement refers
to the likelihood of success in combining references to
meet the limitations of the claimed invention. “[F]ailure
to consider the appropriate scope of the . . . patent’s
claimed invention in evaluating the reasonable expectation
of success . . . constitutes a legal error that [is] review[ed]
without deference.” Allergan, 754 F.3d at 966
(emphasis added). Under the Board’s uncontested construction,
“claim 1 does not require removal of the protecting
group to allow subsequent nucleotide incorporation,”
let alone quantitative removal. Intelligent Bio-Sys., Inc.,
2015 WL 996355, at *4. Accordingly, it is of no moment
that Zavgorodny’s protecting group would not be removed
quantitatively in Tsien or Ju’s sequencing method—
removal is simply not required by the claim of the ’537
patent. The Board seemed to believe that the “reasonable
expectation of success” inquiry looked to whether one
would reasonably expect the prior art references to operate
as those references intended once combined. That is
not the correct inquiry—one must have a motivation to
combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue. The
Board’s reliance on the absence of a reasonable expectation
of success was, thus, improper. See id. at *5–6 (citing
KSR, 550 U.S. at 421 to support the proposition “that a
conclusion of obviousness requires a reasonable expectation
of success”).

BUT, the Board's legal error did NOT merit reversal:

Yet this court “sit[s] to review judgments, not opinions.”
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1540 (Fed. Cir. 1983). And while the Board conflated two
different legal concepts—reasonable expectation of success
and motivation to combine—it nevertheless made
sufficient factual findings to support its judgment that the
claims at issue are not invalid. It was IBS’s burden to
demonstrate both “that a skilled artisan would have been
motivated to combine the teachings of the prior art references
to achieve the claimed invention, and that the
skilled artisan would have had a reasonable expectation
of success in doing so.” Kinetic Concepts, Inc. v. Smith &
Nephew, Inc. 688 F.3d 1342, 1360 (Fed. Cir. 2012) (quoting
Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566
F.3d 989, 994 (Fed. Cir. 2009) (internal quotation marks
omitted)); In re Cyclobenzaprine Hydrochloride Extended–
Release Capsule Patent Litig., 676 F.3d 1063, 1068–69
(Fed. Cir. 2012). Despite the loose language employed by
the Board, its factual findings support its conclusion that
the claims are not invalid.

The end-result was accepted:

The Board, therefore, was justified in finding that,
“despite having acknowledged the quantitative deblocking
requirement in Tsien (Pet. 37), the Petition did not provide
a specific or credible explanation why an ordinary
artisan would have expected Zavgorodny’s azidomethyl
protecting group to meet Tsien’s quantitative deblocking
requirement under conditions suitable for use in Tsien’s
sequencing methods.” Intelligent Bio-Sys., Inc., 2015 WL
996355, at *8. While this shortcoming is irrelevant to a
finding that there was no reasonable expectation of success
in meeting the claims of the ’537 patent, which do not
require quantitative deblocking at all, it is central to a
finding of no motivation to combine. This is because the
petitioner’s sole argument for why one of skill in the art
would be motivated to combine Zavgorodny’s azidomethyl
group with Tsien’s SBS method was because it would
meet Tsien’s quantitative deblocking requirement. “When
an obviousness determination relies on the combination of
two or more references, there must be some suggestion or
motivation to combine the references.” WMS Gaming,
Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999); see also Dome Patent L.P. v. Lee, 799 F.3d 1372,
1380 (Fed. Cir. 2015) (“If all elements of a claim are found
in the prior art, as is the case here, the factfinder must
further consider the factual questions of whether a person
of ordinary skill in the art would be motivated to combine
those references, and whether in making that combination,
a person of ordinary skill would have had a reasonable
expectation of success.”).

The substantial evidence sandard was relevant:

There is, moreover, substantial evidence to support a
finding that a person of ordinary skill would not have had
reason to combine Tsien or Ju with Zavgorodny to achieve
the claimed invention.

(...)

These references support a
conclusion that the claimed efficiency that allegedly
motivated the combination would not be achieved and
that a person of ordinary skill in this field would not have
been motivated to use the azidomethyl group of Zavgorodny
as a “protecting group [that] can be modified or
removed to expose a 3′ [hydroxyl] group” of a nucleic acid
molecule, as the claim requires. This is so because the
azidomethyl group would have been expected to perform
inefficiently in that role.
IBS submitted an initial petition that articulated a set
of rationales for why the challenged claims were invalid,
including why a person of ordinary skill would be motivated
to combine the prior art references at issue. IBS
made a clear argument as to why a person of ordinary
skill would be motivated to combine the prior art references
at issue and Illumina demonstrated the error in
that argument, which the Board credited. This factual
finding by the Board is supported by substantial evidence.
The Board did not err in finding that the grounds of
invalidity described in IBS’s petition were not established.

Of the issues with the reply brief:

It is of the utmost importance that petitioners in the
IPR proceedings adhere to the requirement that the
initial petition identify “with particularity” the “evidence
that supports the grounds for the challenge to each
claim.” 35 U.S.C. § 312(a)(3). “All arguments for the
relief requested in a motion must be made in the motion.
A reply may only respond to arguments raised in the
corresponding opposition or patent owner response.” 37
C.F.R. § 42.23(b). Once the Board identifies new issues
presented for the first time in reply, neither this court nor
the Board must parse the reply brief to determine which,
if any, parts of that brief are responsive and which are
improper. As the Board noted, “it will not attempt to sort
proper from improper portions of the reply.” Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug.
14, 2012).

A worthwhile practice tip:

Unlike district court litigation—where
parties have greater freedom to revise and develop their
arguments over time and in response to newly discovered
material—the expedited nature of IPRs bring with it an
obligation for petitioners to make their case in their
petition to institute. While the Board’s requirements are
strict ones, they are requirements of which petitioners are
aware when they seek to institute an IPR.

And

In these circumstances, we
find that the Board did not err in refusing the reply brief
as improper under 37 C.F.R. § 42.23(b) because IBS relied
on an entirely new rationale to explain why one of skill in
the art would have been motivated to combine Tsien or Ju
with a modification of Zavgorodny.
Because we conclude that the reply brief and accompanying
declaration exceeded the scope of the reply under
§ 42.23(b), and, therefore, that the Board did not abuse its
discretion in excluding those documents, we need not
resolve whether the reply brief complied with 37 C.F.R.
§ 42.6(a)(3), which states that “[a]rguments must not be
incorporated by reference from one document into another
document.” See Intelligent Bio-Sys., Inc., 2015 WL
996355, at *9. Nor do we review the Board’s conclusion
that, even if proper, the arguments contained in the reply
brief are unpersuasive for the same reason it found the
arguments in the petition unpersuasive. Id. at *10.

Sunday, May 08, 2016

Plagiarism matter in Alachua County, Florida

The school superintendent [Owen Roberts] self-published a book which apparently contained copied material not fully
attributed to source. One issue: is a self-published book to be held to academic norms?

From the Gainesville Sun:

Yet Roberts, who holds a doctorate in educational research and evaluation from the University of Miami, told The Sun that he didn't “know there were academic norms.” He seemed to suggest his book should be held to a different standard because he was just compiling research and his experiences, but didn't intend for the book to be used in a scholarly way.

Some questionable text caught the attention of IPBiz:

Part of the problem was that the book was self-published. An editor would have caught the sourcing issues, as School Board Chairwoman Eileen Roy suggested to The Sun.

There are many examples, already documented on IPBiz, wherein editors did NOT catch plagiarism, but readers did.
A diligent editor, checking for copying, and analyzing the situation, might be helpful, but there is little time.
And in the academic world, the thesis committee of Glenn Poshard did not catch his plagiarism. Same for the Army War College incident.

CBS Sunday Morning on 8 May 2016

Charles Osgood introduced the stories for Mothers Day, May 8, 2016. The cover story was "never say never" by Serena Altschul on mothers over 40 years of age. John Blackstone on Keith Urban. Lee Cowan on Allison Jenney. Rita Braver on Bei Bei the panda.
Mo Rocca on George Hodgeman of Bettyville. Conor Knighton on the Petrified Forest.

News for May 8. The fire at Ft. McMurray in Alberta, Canada. Sadiq Khan, mayor of London.

The cover story --Never say never-- began with a clip of Ayala Donchin of Evelyn's Kitchen, a mother at 45. [The Evelyn's Kitchen website mentions the appearance on CBS Sunday Morning, an interesting cross-branding.] There was mention of 8443 mothers who were 45 or more years old. There were interviews with Susan Newman, and Joanne Stone of Mt. Sinai, and Susan Willis.

The almanac was May 8, 1987, when Gary Hart dropped out of the presidential race. The picture with Donna Rice and Hart inviting reporters to "follow me around," which they did.

There was a brief mention of KFC's "edible fingernail polish," which is marketed in Hong Kong. [Ogilvy and Mather were involved. AND, later during Sunday Morning, there was a commercial for a KFC product.]

Mo Rocca did the piece on George Hodgeman who went back to Paris, Missouri to care for his mother Betty, and later wrote a book Bettyville. Her favorite book was the Secret Confessions of Ava Gardner.

There was a presentation of an animated feature by Jacob Frey. Therein a boy receives a puppy that is missing part of a leg. At the end, one sees the boy is also missing part of a leg.

[KFC commercial appears before Braver piece on Bei Bei]

Steve Hartman in Leesburg, VA.

Lee Cowan noted Allison Jenney was discovered by Paul Newman, both of whom went to Kenyon College.

Conor Knighton's piece on the Petrified Forest was unusual, in focusing on people who took pieces of petrified wood, but later returned them. the Conscience pile.

There was an opinion piece by Susan Wojcicki of Google advocating paid maternity leave. In the early days of Google, operations were out of Wojcicki's garage. Susan has done an op-ed in the Wall Street Journal on paid maternity leave.

Saturday, May 07, 2016

The upcoming case on the "on-sale" bar involving The Medicines Company and Angiomax

From within a post at Statnews on the Angiomax case:

Meanwhile, in its own court filing in support of The Medicines Company, the BIO industry trade group wrote the panel decision “would apply to any contract in which a patent holder uses a CMO [contract manufacturer organization] to assist in producing a product made by a patentable process. Such an interpretation of the on-sale bar discourages use of CMOs and, accordingly, promotes an inefficient and costly method of production of valuable pharmaceuticals.”

Honeywell, Google/Nest resolve thermostat patent war

A press release notes:

Google Inc. and Honeywell today [May 5, 2016] announced that they have reached a long-term patent cross-license agreement reflecting the respective strength of the companies' patent portfolios. Google and Honeywell believe that this patent accord promotes product innovation and consumer choice in the market for smart home products. The agreement fully resolves pending patent litigation between Honeywell and Nest Labs. Terms of the agreement are otherwise confidential.

Thursday, May 05, 2016

First woman to receive US Patent: May 5, 1809

Of "cinco de mayo" and patents, on May 5,1809, Mary Kies became the first woman to receive a U.S. patent, for a weaving technique.

The Kies story ended sadly, as with the case of Goodyear; Smithsonian notes

But if you want to see Kies’ patent in person, you’re out of luck: It was destroyed in a huge fire that swept through the Patent Office in 1836, decimating approximately 10,000 patents and thousands of documents, drawings and pending patents. Kies’ story ends sadly, too; fashions changed and she died penniless, buried in a pauper’s grave in Brooklyn, New York.

**The "cinco de mayo" holiday celebrates the victory of the Mexican army over the French at the Battle of Puebla on May 5, 1862. The French would later prevail and install Maximilian, who lasted until Queretaro in 1867.

There is a connection to the American Civil War. On May 17, 1865, about three years after "cinco de mayo", General Grant ordered General Sheridan, with 50,000 men, to Texas, manifestly to deal with Kirby-Smith but sub rosa to deal with the French and Maximilian. This unit was known as the Military Division of the Southwest. Additionally, Sheridan was to keep Confederates from crossing the border, from the U.S. into Mexico!

From wikipedia:

The Military Division of the Southwest (after June 27 the Division of the Gulf), commanded by Maj. Gen. Phillip H. Sheridan, occupied Texas between June and August. Consisting of the IV Corps, XIII Corps, the African-American XXV Corps, and two 4,000-man cavalry divisions commanded by Brig-Gen. Wesley Merritt and Maj-Gen. George A. Custer, it aggregated a 50,000-man force on the Gulf Coast and along the Rio Grande to pressure the French intervention in Mexico and garrison the Reconstruction Department of Texas.

link: https://en.wikipedia.org/wiki/Battle_of_Palmito_Ranch

**In passing, IPBiz on blawgsearch on the day, and the week, of 5 May 2016:

Who invented Bitcoin?

From Ars Technica, on the evolving Craig Wright matter :

Of course, Craig Wright already said goodbye on Monday, telling the BBC his discussion would be the one and only television interview he would do. "I don't think I should have to be out there," he told the BBC. "There's nothing owed to the world... Why do I have to take credit for it? Why do I?"

"I want to work," he continued. "I don't work and invent and write papers and code by coming in front of TVs. I don't want money, I don't want fame, I don't want adoration, I just want to be left alone."

That's the persona Wright built—brilliant but incredibly sensitive and disdaining the limelight—even though he apparently hired a PR firm to put himself in the public eye. Since minute one, he has been certain to remind everyone that he's desperately concerned with his own privacy, to the point of being rude to the journalists sharing his story (the very same journalists he sought out.)

Real proof that a person or group of people is Satoshi Nakamoto, the moniker of the creator of Bitcoin, could be had within minutes. Moving around early bitcoin or creating a new signature with Satoshi's encryption keys would be enough.

Barring that, it looks like Wright will only be known as the first "cryptographically proven con artist," as security researcher Dan Kaminsky put it.

Wednesday, May 04, 2016

The CAFC and the case of the misleading ellipsis

From a footnote in the Rhoads case (lost by appellant Rhoads):

Rhoads uses a somewhat misleading ellipsis to
suggest that the Examiner conceded that Davis did not
transmit electronic information to the device to cause the
device to execute an instruction. See Appellant’s Br. at 22.
That is not accurate. The Examiner found that Davis did
disclose that function, but that Davis did not disclose
signaling to the user that an instruction had been successfully
performed. A123; see also Davis at ¶ 97 (“In applications
where the object is a machine, the object reference
may also facilitate remote control and remote updating of
control instructions for the machine.”).

general link: http://www.cafc.uscourts.gov/opinions-orders

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/498,709

Washington Post not telling full story on Cuozzo/IPR?

From a Washington Post piece on the Cuozzo case, and the ambiguities left by Congress as to IPR in the AIA:

The problem: Congress never told the agency [USPTO] how it was supposed to review contested patents, so the Patent Office decided to use the same broad standards that it has always used to review applications, not the textual standards of the federal courts. This stacked the patent review process against patent-holders, the opposite of what would happen in a court trial. Over the past few years, inter partes review has canceled hundreds of patents, shooting down more than 80 percent of the existing patents subject to review in cases that weren’t settled.

Critics of inter partes review — mostly pharmaceutical and software start-up companies that rely heavily on their intellectual property to do business — have taken to calling the board governing the review the “Patent Death Squad.” They argue that the new system has upended intellectual property rights and stymied innovation in the United States.

Their opponents — generally bigger tech companies like Google and Apple (the common targets of patent litigation) — defend the Patent Office. For them, the new review process is doing what it was designed to do: weeding out bogus patent claims and offering a more efficient alternative years-long court battles.

The Supreme Court is now pitted between these two sets of industries and must decide what standards inter partes review should use. Should it act as an extension of the Patent Office’s application process, striking down most of the patents with a tough standard? Or should it act as a fast-track replacement for the court system, with a lower standard?

The Washington Post piece by Robert Gebelhoff did NOT get into the failure of applicants to obtain amendments in IPR. As pointed out by Judge Newman, amending claims is a key part of patent prosecution, and the absence of amendments makes IPR very UNLIKE conventional application review.

http://ipbiz.blogspot.com/2016/01/us-supreme-court-to-hear-cuozzo.html [ An issue raised by Judge Newman was that the use of the BRI standard was incommensurate with the unwillingness of PTAB to allow amendments. ]

According to the article, either the college president, Rear Admiral P. Gardner Howe III, or the War College’s Provost, Dr. Lewis Duncan, rejected the recommendation that the student be given a zero. The article asserts: -- Word around the campus is that the student’s career was preserved because he is slated for a significant command. --

Nvidia, Samsung settle their patent infringement law suits

Nvidia Corp. and Samsung Electronics Co. agreed to settle competing patent lawsuits between the two companies, the companies said Monday.

In the fall of 2014, Nvidia and Samsung filed lawsuits against each other alleging patent infringement and other misconduct.

Nvidia filed suit against Samsung over the use of infringing patents that cover graphics chips. In its own complaint, Samsung alleged that Nvidia infringed upon six patents while falsely advertising that one of its processors was the world’s fastest mobile processor, according to Nvidia’s regulatory filing at the time.

Sunday, May 01, 2016

TIME magazine finds Princeton, NJ is number one in patents per capita

From the story in TIME

When factoring in population size and number of patents over the last forty years, Princeton, N.J., is America’s most genius city, according to TIME’s exclusive ranking. It’s there that advancements ranging from color televisions to ultrasound and radar technology were made

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.